What with NFTs, the pandemic and the metaverse, we seem to be living through a period of disruption in the trademark world. What advice can you give to fellow practitioners looking to future-proof their practices?
Despite these changes, trademark law remains a very structured and balanced ecosystem. My advice would be look to the past, be up-to-date with the present and proactive for the future. The foundations of trademark law (in doctrine and case law) were laid in the past and are necessary, especially for new practitioners to be able to fully comprehend the present and anticipate the future, namely in providing effective services in the current challenging environment.
How do you go about adding value for clients in a competitive environment where stellar legal services are expected as a minimum?
A commercial and practical approach that takes into account the client’s needs is considered by many to be a given, but not in reality, as IP work often tends to be provided in the form of ‘tin can’ advice and services. I do not believe in delivering services in this way. Each case is different, from the simplest clearance search to the most complicated litigation dispute. Every case requires attention and the relevant parameters taken into account in order to provide a tailor-made and effective solution and service.
What has been your most memorable case to date and why?
One of my recent important cases was 15/2021 of the Greek Supreme Court, as it set two precedents critical for trademark enforcement in Greece. The Supreme Court, for the first time, confirmed that the application by analogy on Greek trademark law of national provisions implementing EU Enforcement Directive 2004/48/EU in other IP fields (such as patent law and copyright law) − which had been applied by lower courts for almost a decade − is correct. Greece had not implemented this directive in trademark law even after the deadline for doing so had expired. The courts then started applying by analogy provisions of patent or copyright law, in which the directive provisions were implemented in Greece. In this case, the Supreme Court had its first opportunity to confirm that the numerous first instance and appeal decisions − in which provisions by analogy were applied − were correct. It was also able to consider the application of the method of calculation of damages in the form of an account of profits introduced after the implementation of the aforementioned EU enforcement directive.
Which recent decisions or legislative developments have had the biggest impact on IP strategy in Greece in the past few years?
The trademark law introduced in March 2020, at the beginning of the pandemic, has been the most important legislative development in intellectual property in Greece in recent years, in enacting the latest trademark EU directive. Another recent legislative change introduced the transfer of the Trademark Office from the hands of the Ministry of Development and Competitiveness to the Greek Patent Office. Regarding recent decisions, one of my cases (Greek Supreme Court Decision 249/2021) concerned the paramount issue of “trademark registration immunity” (overturned by the CJEU and the new trademark directive). The Supreme Court ruled for the first time on the ability to bring infringement proceedings against a previously registered trademark. It confirmed that this is possible and that the registration immunity no longer applies following the pioneering CJEU jurisprudence on Fédération Cynologique Internationale C-561/11 and Rosa dels Vents Assessoria C-491/14. This breakthrough ran contrary to wellestablished Greek case law and the practice of the local courts not to accept civil actions against the use of laterregistered marks.
As we hopefully emerge from the pandemic, what changes to the industry and/or working practice do you think are here to stay?
Definitely enhanced online communication methods, which have replaced not only live meetings but also telephone calls. This very direct, effective and multipurpose style of communicating with clients and colleagues is surely here to stay. Regarding the working environment, similarly, remote working has effectively replaced being physically present in the office. Law firms, as well as clients, have adjusted very quickly to this and have implemented systems and processes to maintain this alternative way of working henceforth as the norm, rather than as the exception.
Marina Perraki is a partner at Tsibanoulis & Partners Law Firm and holds a PhD in trademark law from Queen Mary, University of London. She was among the group of experts selected to draft the bill for the implementation of the new EU Trademark Directive in Greece. Dr Perraki is a seasoned litigator with an impressive winning track record. She has practised trademark law for more than 20 years and works mainly with international clients.